AirWatch LLC

Patent Trials and Appeals Board

Jul 12, 2021

2020001543 (P.T.A.B. Jul. 12, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/171,411 06/02/2016 William DeWeese W030.02.C1
(500103-1281)
5677
152577 7590 07/12/2021
Thomas | Horstemeyer, LLP (VMW)
3200 Windy Hill Road, SE
Suite 1600E
Atlanta, GA 30339
EXAMINER
CALDERON IV, ALVARO R
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
07/12/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@thomashorstemeyer.com
ipadmin@vmware.com
uspatents@thomashorstemeyer.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WILLIAM DEWEESE, J. BLAKE BRANNON, and
ERICH STUNTEBECK
Appeal 2020-001543
Application 15/171,411
Technology Center 2100
Before ST. JOHN COURTENAY III, JENNIFER L. MCKEOWN, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

DIRBA, Administrative Patent Judge.

DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 seeks review of the
Examiner’s rejection of claims 1–20. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.

1 This Decision uses the following abbreviations: “Spec.” for the original
Specification, filed June 2, 2016, which claims the benefit of earlier-filed
applications; “Final Act.” for the Final Office Action, mailed December 28,
2018; “Appeal Br.” for Appellant’s Appeal Brief, filed June 27, 2019;
“Ans.” for Examiner’s Answer, mailed October 21, 2019; and “Reply Br.”
for Appellant’s Reply Brief, filed December 23, 2019.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, the real party in interest is
AirWatch, LLC, a subsidiary of VMware, Inc. Appeal Br. 2.
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Application 15/171,411

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BACKGROUND
Appellant’s disclosed embodiments and claimed invention relate to
managing multiple, separate entities or personas on an individual user
device. Spec. ¶¶ 3–8; Abstract. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A non-transitory computer-readable medium for
logging a single user into one of a plurality of personas on a
client device comprising program instructions that, when
executed by at least one hardware processor of the client
device, cause the client device to:
maintain the plurality of personas for the single user on
the client device, each of the plurality of personas comprising a
unique configuration of the client device, wherein a first one of
the plurality of personas comprises an enterprise persona and a
second one of the plurality of personas comprises a personal
persona;
enroll the client device with a management system
configured to monitor the client device for at least one security
vulnerability and configure the client device for secure access
to at least one enterprise resource, wherein the client device is
enrolled by configuring a configuration profile that directs the
client device to configure an operation of the enterprise persona
to ensure security of access of the at least one enterprise
resource;
identify an authentication being made on the client
device by the single user using one of a first authentication
method or a second authentication method;
in response to the first authentication method being used
in the authentication, toggle the client device in accordance
with the enterprise persona, wherein the client device is
managed by the device management service when the client
device is toggled in accordance with the enterprise persona;
and
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in response to the second authentication method being
used in the authentication, toggle the client device in
accordance with the personal persona, wherein the client device
is not managed by the device management service when the
client device is toggled in accordance with the personal
persona.
Appeal Br. 24–25 (Claims App.) (emphasis added).
REJECTIONS
R1. Claims 1–20 stand rejected under the judicially created doctrine
of non-statutory obviousness-type double patenting as being unpatentable
over claims 1–20 of Application No. 14/203,836 in view of Lam
(US 2014/0344922 A1, published Nov. 20, 2014). Final Act. 3–6.
R2. Claims 1–20 stand rejected under 35 U.S.C. § 103 as obvious
over Lam and AirWatch (available at https://web.archive.org/web/
20120609111734/http://www.air-watch.com:80).3 Final Act. 6–15.
R3. Claims 1–20 stand rejected under 35 U.S.C. § 103 as obvious
over Lam and Lang (US 2014/0297825 A1, published Oct. 2, 2014). Final
Act. 15–24.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. 37 C.F.R.

3 Appellant does not dispute the Examiner’s finding that the website shown
in this archive was available on June 9, 2012 and, thus, constitutes prior art.
See Final Act. 6; see generally Appeal Br.
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§ 41.37(c)(1)(iv). Moreover, any new arguments presented by Appellant in
its Reply Brief that address the rejection as originally provided in the Final
Action, rather than positions raised in the Answer, are untimely and waived.
See 37 C.F.R. § 41.41(b)(2).
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Provisional Double Patenting Rejection of Claims 1–20
The Examiner rejected claims 1–20 on the ground of non-statutory
obviousness-type double patenting as being unpatentable over claims 1–20
of Application No. 14/203,836 in view of Lam. Final Act. 3–6.
Appellant does not address Rejection R1 (see generally Appeal Br.),
so we affirm this rejection pro forma.
Obviousness Rejection R2 Based on Lam and AirWatch
The Examiner rejected claims 1–20 as obvious over Lam and
AirWatch. Final Act. 6–15. Appellant argues these claims as a group, using
independent claim 1 as the representative claim (see Appeal Br. 12–19), so
we limit our discussion to claim 1 (see 37 C.F.R. § 41.37(c)(1)(iv)).
Appellant presents three arguments on appeal. See Appeal Br. 12–19.
We address these arguments in turn.
First, Appellant contends that the Examiner erred in finding that Lam
discloses the last claim limitation, which recites “the client device is not
managed by the device management service when the client device is
toggled in accordance with the personal persona.” See Appeal Br. 14–16. In
the Final Office Action, the Examiner found that Lam discloses multiple
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personas on a mobile device, including a private (or personal) persona and a
corporate (or enterprise) persona. Final Act. 7, 8–9 (citing Lam ¶¶ 6, 24–25,
53). For the disputed limitation, the Examiner quotes Lam, which states:
In practical terms, a dual persona of dual profile mobile
device 10 (e.g. smart phone) creates two interfaces on the
device 10,—a corporate one, controlled by the employer or
enterprise of the device user, and a private one which is
independent from the corporate one and typically cannot be
accessed by the corporate enterprise.
Id. at 9 (quoting Lam ¶ 24) (emphasis omitted and added); see also Ans. 4.
Appellant argues that the quoted passage of Lam fails to teach the
disputed limitation—according to Appellant, “an inability of a ‘corporate
enterprise’ to access a private interface of a client device is not the same as a
persona of a client device not being managed by a device management
system.” Appeal Br. 16; see id. (stating that access can be denied “in a
variety of different ways, such as denying access to a network”).
We are not persuaded. The salient question is not whether the
reference recites the limitation in haec verba, or whether its disclosure is
“the same” as the claim limitation; instead, it is whether Lam teaches or
suggests the claim limitation. Here, we agree with the Examiner that Lam
teaches (or at least suggests) the disputed limitation. See Final Act. 7–9;
Ans. 4 (“Lam explicitly clarifies that the enterprise’s device management
service actively manages the enterprise persona and that it does not manage
the personal persona (so much so that it cannot even access the personal
persona, let alone manage it).”). Lam states that the private persona
“typically cannot be accessed by the corporate enterprise” (as opposed to the
corporate persona, which is “controlled” by the corporate enterprise), and
this at least suggests that the private persona is not managed by the corporate
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enterprise. Lam ¶ 24. Thus, we are not persuaded by Appellant’s first
argument.
Second, Appellant argues that Lam fails to teach “enrollment of a
client device with a device management system” and thus does not teach “a
‘client device [being] managed by the device management system when the
client device is toggled in accordance with the enterprise persona.’” Appeal
Br. 16 (emphasis omitted).
This argument is not persuasive because Appellant argues limitations
that do not appear in claim 1. The claim does not recite enrolling with and
management by a “device management system,” but instead recites
“enroll[ing] the client device with a management system” and
“manage[ment] by the device management service.” Appeal Br. 24 (Claims
App.) (emphasis added). Although the latter term (“the device management
service”) appears to lack antecedent basis, the broadest reasonable
interpretation of the claim is that “a management system” and “the device
management service” may be different elements. See In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (claims must be given their
broadest reasonable interpretation during prosecution).
Appellant’s argument also fails to address the Examiner’s specific
findings regarding AirWatch. Appellant argues that Lam, alone, fails to
teach or suggest the identified claim limitations (see Appeal Br. 16), but the
Examiner found that AirWatch teaches enrolling the client device with a
management system and Lam teaches management by the device
management service (see Final Act. 8–12). Appellant’s argument fails to
address the Examiner’s reliance on the combined teachings of the prior art,
so it does not show error on the part of the Examiner. See In re Merck &
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Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.”) (citing In re Keller, 642
F.2d 413, 425 (CCPA 1981) (“[T]he test [for obviousness] is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.”)).
Third, Appellant argues that the Examiner’s combination of Lam and
AirWatch “is an exercise of impermissible hindsight” and “is insufficient for
setting forth a prima facie case of obviousness” because it “does not provide
a motivation why one having ordinary skill in the art would combine Lam
with AirWatch.” Appeal Br. 17–18. Appellant also argues that “Lam does
not provide any teaching, suggestion, or motivation that would have led one
of ordinary skill to modify the system of Lam to work with AirWatch,” and
“it is unknown how [enrolling a client device by configuring a configuration
profile] would be performed on the system of Lam and doing so would
require substantial experimentation.” Id. at 18.
We disagree. The Examiner provides a motivation explaining why
and how an ordinary artisan would have combined Lam and AirWatch, as
set forth in the rejection. See Final Act. 11–12; Ans. 4–5; In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) (requiring a “rational underpinning to support
the legal conclusion of obviousness”), cited with approval in KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007). In particular, the Examiner finds
that AirWatch provides security and management for mobile devices in a
corporate enterprise, and an ordinary artisan would have recognized the
applicability to Lam’s mobile devices that have an enterprise persona
managed by a corporate enterprise. Final Act. 11–12; see also Ans. 4–5
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(noting that Lam at least suggests that the corporate enterprise manages the
enterprise persona, but acknowledging that Lam does not describe “the
machinations of the [claimed] enrollment process per se”). Appellant does
not show error in the reasoning provided, and so Appellant has not shown
error in the conclusion as to obviousness. See In re Cree, Inc., 818 F.3d 694,
702 n.3 (Fed. Cir. 2016) (viewing an “impermissible hindsight” argument as
“essentially a repackaging of the argument that there was insufficient
evidence of a motivation to combine the references”).
In addition, Appellant has not identified any knowledge gleaned only
from the present application that was not within the level of ordinary skill at
the time the claimed invention was made. See In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971). Moreover, Appellant has not provided any
objective evidence of secondary considerations of non-obviousness (e.g.,
long-felt but unmet need, commercial success, or unexpected results), which
“operates as a beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak
Cheese & Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
We are also unpersuaded by Appellant’s conclusory and unsupported
assertion the combination would require undue experimentation. See Estee
Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) (noting that
“arguments of counsel cannot take the place of evidence lacking in the
record”). Finally, we are not persuaded by Appellant’s assertion that Lam
lacks a teaching, suggestion, or motivation to make the proposed
combination because Lam does not need to include this. See KSR, 550 U.S.
at 418–19 (holding the teaching-suggestion-motivation test is not a
prerequisite for concluding that a claim is obvious).
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Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 1, nor do
we find error in the Examiner’s resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 1, as well as claims 2–20, which fall therewith, based on
the combination of Lam and AirWatch.
Obviousness Rejection R3 Based on Lam and Lang
Claims 1–20 also stand rejected as obvious over Lam and Lang. Final
Act. 15–24. For each of these claims, Appellant relies on the same
arguments made with respect to the rejection of claim 1 over Lam and
AirWatch. Appeal Br. 19–22; see Ans. 6–7 (observing “Appellant appears
to merely duplicate their arguments against the Lam-AirWatch
combination”); see generally Reply Br. (not disputing the Examiner’s
characterization of Appellant’s arguments).
Appellant’s arguments are not persuasive for the reasons discussed
above. Consequently, Appellant does not show error in Rejection R3 of
claims 1–20 based on Lam and Lang.
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 Provisional
Obviousness-Type
Double Patenting
1–20
1–20 103 Lam, AirWatch 1–20
1–20 103 Lam, Lang 1–20
Overall
Outcome
1–20
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED